Thursday, October 04, 2012

PTO Fails to Provide Evidence, TTAB Reverses Refusal to Register Shape of Building as Inherently Distinctive Service Mark

The Board reversed a refusal to register the shape of a building (shown below) as a service mark for trade show and leasing services, ruling that the PTO failed to prove that the mark is not inherently distinctive. Observing that "a building's facade may function as a mark," the Board looked to the CCPA's Seabrook test, but because the PTO did not submit any evidence bearing on the Seabrook factors, it did not establish a prima facie case in support of the refusal. In re Furniture Mart Land Holdings I, LLC, Serial Nos. 77323885 and 77323944 (September 12, 2012) [not precedential].

More than half of the Board's opinion dealt with the question of what issues were on appeal. Applicant amended the application to seek registration under Section 2(f), and that normally would be a concession that the applied-for mark is not inherently distinctive. However, the Examining Attorney continued to treat the case as if inherent distinctiveness was still at issue, and Applicant did the same in its appeal brief. So the Board felt constrained to decide the inherent distinctiveness issue.

As stated above, the PTO did not submit any evidence to support its argument that the building design is "rather commonplace" and "conventional" for a trade show facility. The Examining Attorney maintained that the proposed mark comprises "a mere refinement of a commonly adopted and well-known architectural form for trade complexes or convention centers and would not be inherently regarded as a source indicator."

The Board recognized that the PTO has "limited resources," but "mere opinion or argument is no substitute for evidence." Therefore, since the PTO failed to make a prima facie showing that the building design is not inherently distinctive, the Board reversed the refusal.